CHAPTER 621a
TRADEMARKS AND SERVICE MARKS

*See also chapter 620a.
See Sec. 53-347a re penalty provisions.
Sec. 35-11a et seq. cited. 30 CA 493, 499.

Table of Contents

Sec. 35-11a. Definitions.
Sec. 35-11b. Disqualifications of marks for registration.
Sec. 35-11c. Application for registration.
Sec. 35-11d. Examination and amendment of application. Disclaimer. Refusal of registration. Concurrent applications.
Sec. 35-11e. Certificate of registration. Effective period. Renewal; fee. Record.
Sec. 35-11f. Assignment of mark and registration. Change of name. Recording of other instruments.
Sec. 35-11g. Cancellation of registration.
Sec. 35-11h. Classes of goods and services.
Sec. 35-11i. Illegal use of mark. Remedies.
Sec. 35-11j. Fraudulent registration.
Sec. 35-11k. Common law rights not affected.
Sec. 35-11l. Trademark and service mark information furnished on request; fees.
Sec. 35-11m. Incontestable right of registrant.


Sec. 35-11a. Definitions. As used in this chapter:
(1) The term "trademark" means any word, name, symbol or device or any combination thereof used by a person to identify and distinguish the goods of such person, including a unique product, from those goods made or sold by others, and to indicate the source of the goods, even if that source is unknown.
(2) The term "service mark" means any word, name, symbol or device or any combination thereof used by a person to identify the services of one person, including a unique service, to distinguish them from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names used by a person, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
(3) The term "mark" includes any trademark or service mark entitled to registration under this chapter whether registered or not.
(4) The term "trade name" includes words and names lawfully adopted and used by any person engaged in any business, trade, occupation or vocation to identify such business, trade, occupation or vocation whether or not registered, filed or recorded under any law of the state of Connecticut, or of any other state, or of the United States.
(5) The term "person" means any individual, firm, partnership, corporation, limited liability company, association, union, governmental body or agency or other organization capable of suing or being sued in a court of law.
(6) The term "applicant" embraces the person filing an application for registration of a mark under this chapter, and the legal representatives, successors or assigns of such person.
(7) The term "registrant" embraces the person to whom the registration of a mark under this chapter is issued, and the legal representatives, successors or assigns of such person.
(8) The term "use" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this chapter, a mark shall be deemed to be in use (A) on goods when it is placed in any manner on the goods or their containers, or the displays associated therewith, or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and such goods are sold or otherwise distributed in this state, and (B) on services when it is used or displayed in the sale or advertising of services and the services are rendered in this state.
(9) A mark shall be deemed to be "abandoned" (A) when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of abandonment; (B) when any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin.
(10) The term "related company" means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
(11) The term "dilution" means the lessening of the capacity of the registrant's mark to identify and distinguish goods or services, through use of the mark by another person, regardless of the presence or absence of (A) competition between the users of the mark, or (B) likelihood of confusion, mistake or deception arising from that use.
(1963, P.A. 51, S. 1; P.A. 93-152, S. 1; May 25 Sp. Sess. P.A. 94-1, S. 90, 130; P.A. 95-79, S. 131, 189.)
History: P.A. 93-152 replaced alphabetic with numeric Subdiv. indicators, revised definitions of "trademark" and "service mark", amended definition of "person" to include any "governmental body or agency", amended definitions of "applicant" and "registrant" to delete "predecessors" of such person, replaced separate definitions of when a trademark and a service mark shall be deemed to be used in this state with a definition of the term "use" and a provision specifying when a mark shall be deemed to be in use on goods and on services, made technical changes to definition of "abandoned" and added definitions of "related company" and "dilution"; May 25 Sp. Sess. P.A. 94-1 amended Subdiv. (8) substituting "mark" for "trademark", effective July 1, 1994; P.A. 95-79 redefined "person" to include a limited liability company, effective May 31, 1995.
Subsec. (a):
Cited. 180 C. 720, 726.

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Sec. 35-11b. Disqualifications of marks for registration. A mark in use in Connecticut by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall be registered unless it (1) consists of or comprises immoral, deceptive or scandalous matter; or (2) consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or which may bring them into contempt or disrepute; or (3) consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or of the United Nations, or any simulation thereof; or (4) consists of or comprises the name, signature or portrait identifying a particular living individual, except with the individual's written consent; or (5) consists of a mark which (A) when used on or in connection with the goods or services of the applicant is merely descriptive or deceptively misdescriptive of them, or (B) when applied to the goods or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or (C) is primarily merely a surname, provided nothing in this subsection shall prevent the registration of a mark used in this state by the applicant which has become distinctive of the applicant's goods or services. The Secretary of the State may accept as evidence that the mark has become distinctive, as applied to the applicant's goods or services, proof of substantially exclusive and continuous use thereof as a mark by the applicant in this state for the five years next preceding the date of the filing of the application for registration; or (6) consists of or comprises a mark which so resembles a mark registered in this state or a mark or trade name used in this state by another prior to the use by the applicant and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or to cause mistake or to deceive purchasers; or (7) consists of or comprises a mark which so resembles a mark previously registered in the United States Patent and Trademark Office by another and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or to cause mistake or to deceive purchasers, unless the applicant commenced use of the mark in this state prior to the granting of the federal registration.
(1963, P.A. 51, S. 2; P.A. 93-152, S. 2.)
History: P.A. 93-152 amended Subdiv. (4) to replace "the name, signature or portrait of any living individual" with "the name, signature or portrait identifying a particular living individual", amended Subdiv. (5) to replace in Subpara. (A) "when applied to the goods or services" with "when used on or in connection with the goods or services", amended Subdiv. (6) to replace "previously used in this state by another" with "used in this state by another prior to the use by the applicant" and replace "when applied to the goods or services" with "when used on or in connection with the goods or services" and added Subdiv. (7) re resemblance of a mark to a mark previously federally registered.

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Sec. 35-11c. Application for registration. (a) Subject to the limitations set forth in this chapter, any person who adopts and uses a mark in this state may file in the office of the Secretary of the State, in a manner complying with the requirements of the secretary, an application for registration of that mark setting forth, but not limited to, the following information: (1) The name and business address of the person applying for such registration and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary, (2) the goods or services on or in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods or services and the class in which such goods or services fall, (3) the date when the mark was first used anywhere and the date when it was first used in this state, by the applicant or his predecessor in interest, (4) a statement that the applicant is the owner of the mark or the owner's representative and that, to the knowledge of the person verifying the application, no other person has the right to use such mark in this state either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive purchasers, (5) a statement as to whether an application to register the mark, or portions or composites thereof, has been filed by the applicant in the United States Patent and Trademark Office; and, if so, the applicant shall provide full particulars with respect thereto including the filing date and serial number of each application, the status thereof, the identification of any marks cited during the pendency thereof, and, if any mark was refused registration, the reasons therefor, and (6) a statement that, to the knowledge of the person verifying the application, the mark is not known to be the subject matter of an existing federal registration granted to another. The Secretary of the State may also require that a drawing of the mark, complying with such requirements as the secretary may specify, be submitted.
(b) The application shall be signed subject to the penalties for false statement by the applicant or by a member of the firm or an officer of the corporation or association applying.
(c) The application shall be accompanied by three specimens or photographs showing the mark as actually used in commerce in this state.
(d) The application shall be accompanied by a fee of fifty dollars, payable to the Secretary of the State, which fee shall not be refundable.
(1963, P.A. 51, S. 3; P.A. 73-483, S. 1; P.A. 93-152, S. 3; P.A. 96-180, S. 111, 166.)
History: P.A. 73-483 increased filing fee in Subsec. (d) from fifteen to twenty-five dollars; P.A. 93-152 amended Subsec. (a) to replace "on a form to be furnished by said secretary" with "in a manner complying with the requirements of the secretary", add in Subdiv. (1) "or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary", replace in Subdiv. (3) "predecessor in business" with "predecessor in interest", add in Subdiv. (4) that the statement specify that the applicant is the owner of the mark "or the owner's representative" and that "to the knowledge of the person verifying the application" no other person has the right to use the mark, require in Subdiv. (5) that if any mark was refused registration the applicant provide the reasons therefor and add Subdiv. (6) requiring the applicant to include a statement that the mark is not known to be the subject matter of an existing federal registration granted to another and authorizing the secretary of the state to require that a drawing of the mark be submitted, amended Subsec. (b) to require the application to be signed "subject to the penalties for false statement" rather than "verified", amended Subsec. (c) to require the application to be accompanied by "three specimens or photographs showing the mark as actually used in commerce in this state" rather than "a specimen or facsimile of such mark in quadruplicate" and amended Subsec. (d) to replace "filing fee" with "fee", increase the fee from twenty-five to fifty dollars and provide that the fee shall not be refundable; P.A. 96-180 made technical change in Subsec. (a) to correct reference to U.S. Patent and Trademark Office, effective June 3, 1996.

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Sec. 35-11d. Examination and amendment of application. Disclaimer. Refusal of registration. Concurrent applications. (a) Upon the filing of an application for registration and payment of the fee provided in section 35-11c, the Secretary of the State shall cause the application to be examined to ensure conformity with sections 35-11a to 35-11c, inclusive.
(b) The applicant shall provide any additional pertinent information requested by the Secretary of the State including a description of a design mark, and the applicant may make, or authorize the secretary to make, such amendments to the application as may be reasonably requested by the secretary or deemed by the applicant to be advisable to respond to any rejection or objection.
(c) The Secretary of the State may require the applicant to disclaim an unregistered component of a mark otherwise registrable, and an applicant may voluntarily disclaim a component of a mark sought to be registered.
(d) No disclaimer shall prejudice or affect the applicant's or registrant's rights of registration on another application if the disclaimed matter is or becomes distinctive of the applicant's or registrant's goods or services.
(e) If the applicant is found not to be entitled to registration, the Secretary of the State shall advise the applicant thereof and of the reasons therefor. The applicant shall have a reasonable period of time specified by the Secretary of the State in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the Secretary of the State finally refuses registration of the mark or (2) the applicant fails to reply or amend within the specified period, whereupon the application shall be deemed to have been abandoned.
(f) If the Secretary of the State finally refuses registration of the mark, the applicant may seek a writ of mandamus to compel such registration. Such writ may be granted, but without costs to the Secretary of the State, on proof that all the statements in the application are true and that the mark is otherwise entitled to registration.
(g) In the instance of concurrent applications for registration of the same or confusingly similar marks for the same or related goods or services, the Secretary of the State shall grant the registration to the applicant alleging the first date of use in the application for registration and reject the other application or applications. If any rejected applicant considers that he has prior or superior rights to the mark, he may bring an action for cancellation of the registration.
(1963, P.A. 51, S. 4; P.A. 73-483, S. 2; P.A. 93-152, S. 4.)
History: P.A. 73-483 added Subsec. (d) re procedure where secretary receives concurrent applications to register same or confusingly similar marks; P.A. 93-152 inserted a new Subsec. (b) to require the applicant to "provide any additional pertinent information requested by the secretary of the state", formerly part of Subsec. (a), require the applicant to include a description of a design mark when requested and authorize amendments to the application to respond to any rejection or objection, inserted a new Subsec. (c) re disclaimer of a component of a mark, inserted a new Subsec. (d) re effect of a disclaimer on another application, relettered the remaining Subsecs. accordingly and amended Subsec. (e) to add "or amend" in Subdiv. (2).

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Sec. 35-11e. Certificate of registration. Effective period. Renewal; fee. Record. (a) Upon compliance by the applicant with the requirements of this chapter, the Secretary of the State shall cause a certificate of registration to be issued and delivered to the applicant. The certificate of registration shall be issued under the signature of the Secretary of the State and the seal of the state, and it shall show the name and business address and, if a corporation, the state of incorporation, or if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the Secretary of the State, of the person claiming ownership of the mark, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this state, the class of goods or services and a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date and the term of the registration. Any certificate of registration issued by the Secretary of the State or a copy thereof certified by the Secretary of the State shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state.
(b) (1) Registration of a mark under this chapter shall be effective for a term of five years from the date of registration and, upon application filed within six months prior to the expiration of such term, in a manner complying with the requirements of the Secretary of the State, the registration may be renewed for a like term from the end of the expiring term. A fee for the application for renewal of fifty dollars, payable to the Secretary of the State, shall accompany the application for renewal of the registration. A registration of a mark may be renewed for successive periods of five years in like manner. (2) Any registration in force on October 1, 1993, shall expire ten years from the date of the registration or of the last renewal thereof and may be renewed for periods of five years each by filing a renewal application with the Secretary of the State as provided in subdivision (1) of this subsection.
(c) All applications for renewal under this section shall include a verified statement that the mark has been in use and is still in use in this state, and include three specimens showing actual use of the mark in commerce in the state upon or in connection with the goods or services.
(d) The Secretary of the State shall keep for public examination a record of all marks registered or renewed under this chapter.
(1963, P.A. 51, S. 5; P.A. 73-483, S. 3; P.A. 93-152, S. 5.)
History: P.A. 73-483 raised renewal fee in Subsec. (b) from fifteen to twenty-five dollars; P.A. 93-152 amended Subsec. (a) to require the certificate to show "if a partnership, the state in which the partnership is organized and the names of the general partners, as specified by the secretary of the state" and show the class of services and a description of the services in connection with which the mark is used, amended Subdiv. (1) of Subsec. (b) to rephrase provisions, reduce from ten to five years the term of a registration and renewal and replace "a renewal fee of twenty-five dollars" with "a fee for the application for renewal of fifty dollars", amended Subdiv. (2) of Subsec. (b) to replace obsolete provision re expiration and renewal of registrations in force on October 1, 1963, with provision re expiration and renewal of registrations in force on October 1, 1993, deleted as obsolete former Subsec. (c) requiring notification by the secretary of the state of all registrants within eighteen months of October 1, 1963, of expiration dates of such registrations and inserted a new Subsec. (c) to require all renewal applications to include a verified statement re use of the mark and three specimens showing actual use of the mark.

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Sec. 35-11f. Assignment of mark and registration. Change of name. Recording of other instruments. (a) Any mark and its registration under this chapter shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instruments in writing duly executed and may be recorded with the Secretary of the State upon the payment of a recording fee of twenty-five dollars, for each registration in the assignment document, payable to the Secretary of the State, who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this chapter shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the Secretary of the State within three months after the date thereof or prior to such subsequent purchase.
(b) Any registrant or applicant effecting a change of the name of the person to whom the registration was issued or by whom an application was filed may record a certificate of change of name of registrant or applicant with the Secretary of the State upon the payment of the recording fee of twenty-five dollars for each registration identified by the registrant or applicant.
(c) The Secretary of the State shall issue in the new name of the registrant or applicant, or the assignee, a new certificate for the remainder of the term of the registration or last renewal thereof.
(d) Other instruments which relate to a mark registered or application pending pursuant to this chapter including, but not limited to, licenses, security interests or mortgages, may be recorded in the discretion of the Secretary of the State, provided such instrument is in writing and duly executed. A grant of a security interest shall be by instrument in writing duly executed. Such other instruments shall be recorded by the Secretary of the State upon the payment of the recording fee of twenty-five dollars for each registration identified in the instrument.
(e) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the Secretary of the State, the record shall be prima facie evidence of execution.
(f) A photocopy of any instrument referred to in subsection (a), (b), (c) or (d) of this section shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original.
(g) The Secretary of the State shall keep for public examination a record of all documents recorded pursuant to this section.
(1963, P.A. 51, S. 6; 1969, P.A. 60; P.A. 73-483, S. 4; P.A. 93-152, S. 6; May 25 Sp. Sess. P.A. 94-1, S. 91, 130.)
History: 1969 act added provision re procedure for changing name under which mark was issued; P.A. 73-483 replaced fifteen-dollar recording fee with twenty-dollar fee for each assignment document and imposed five-dollar fee "for each additional trademark in excess of one in the same assignment document"; P.A. 93-152 inserted Subsec. indicators, amended Subsec. (a) to replace "a fee of twenty dollars, for each assignment document and five dollars for each additional trademark in excess of one in the same assignment document," with "a recording fee of twenty-five dollars, for each registration in the assignment document," amended Subsec. (b) to make provisions re change of name applicable to an "applicant", replace "a change of his name under which his mark was issued" with "a change of the name of the person to whom the registration was issued or by whom an application was filed" and replace "a fee of fifteen dollars" with "the recording fee of twenty- five dollars for each registration identified by the registrant or applicant", amended Subsec. (c) to add "or applicant, or the assignee", added Subsec. (d) to authorize the recording of other related instruments that are in writing and duly executed, require a grant of a security interest to be by instrument in writing duly executed and require such other instruments to be recorded upon the payment of the recording fee of twenty-five dollars for each registration identified in the instrument, added Subsec. (e) re prima facie evidence of execution, added Subsec. (f) re recording of a certified photocopy of certain instruments and added Subsec. (g) to require the secretary of the state to keep for public examination a record of all documents recorded pursuant to this section; May 25 Sp. Sess. P.A. 94-1 amended Subsec. (d) by making technical change, effective July 1, 1994.

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Sec. 35-11g. Cancellation of registration. The Secretary of the State shall cancel from the register, in whole or in part, (1) any registration concerning which the Secretary of the State receives a voluntary request for cancellation thereof from the registrant or the assignee of record, accompanied by a recording fee of twenty-five dollars; (2) all registrations granted under this chapter and not renewed in accordance with the provisions hereof; (3) any registration concerning which a court of competent jurisdiction orders cancellation after finding: (A) That the registered mark has been abandoned; (B) that the registrant is not the owner of the mark; (C) that the registration was granted contrary to the provisions of section 35-11b; (D) that the registration was obtained fraudulently or in bad faith; (E) that the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, to a mark registered by another person in the United States Patent and Trademark Office prior to the date of first use in Connecticut by the registrant under this chapter, and used in Connecticut and not abandoned, provided, if the registrant proves that the registrant is the owner of concurrent registration of a mark in the United States Patent and Trademark Office covering an area including this state, the registration under this chapter shall not be cancelled for such area of the state; (F) that the registered mark has become the generic name for the goods or services, or a portion thereof, for which it has been registered; or (G) that another person has rights in the state of Connecticut superior to those of the registrant; or (4) any registration concerning which a court of competent jurisdiction orders cancellation on any other ground.
(1963, P.A. 51, S. 7; P.A. 73-483, S. 5; P.A. 93-152, S. 7; May 25 Sp. Sess. P.A. 94-1, S. 92, 130; P.A. 96-180, S. 112, 166.)
History: P.A. 73-483 imposed five-dollar fee in Subdiv. (2); P.A. 93-152 deleted as obsolete former Subdiv. (1) requiring cancellation after October 1, 1965, of registrations that are more than ten years old and not renewed and renumbered the remaining Subdivs. accordingly, authorized the secretary to cancel a registration "in whole or in part", amended Subdiv. (1) to replace "a fee of five dollars" with "a recording fee of twenty-five dollars", amended Subdiv. (3) to insert Subpara. indicators, amend Subpara. (E) to reposition language and add proviso prohibiting cancellation for an area of the state when the registrant is the owner of concurrent federal registration covering an area including this state and amend Subpara. (F) to replace "common descriptive name of an article, substance or service" with "generic name for the goods or services, or a portion thereof, for which it has been registered" and added Subdiv. (4) to require cancellation of any registration concerning which a court orders cancellation on any ground; May 25 Sp. Sess. P.A. 94-1 made technical change, effective July 1, 1994; P.A. 96-180 made technical change to correct reference to U.S. Patent and Trademark Office, effective June 3, 1996.

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Sec. 35-11h. Classes of goods and services. The following general classes of goods and services are established for convenience of administration of this chapter, but not to limit or extend the applicant's or registrant's rights, and a single application for registration of a mark may include any or all goods upon which or services with which the mark is actually being used comprised in a single class and indicating the appropriate class of goods or services. In no event shall a single application include goods or services upon which the mark is being used which fall within different classes of goods or services. Said classes are as follows:

GOODS
CLASSTITLE
1.Chemicals.
2.Paints.
3.Cosmetics and cleaning preparations.
4.Lubricants and fuels.
5.Pharmaceuticals.
6.Metal goods.
7.Machinery.
8.Hand tools.
9.Electrical and scientific apparatus.
10.Medical apparatus.
11.Environmental control apparatus.
12.Vehicles.
13.Firearms.
14.Jewelry.
15.Musical instruments.
16.Paper goods and printed matter.
17.Rubber goods.
18.Leather goods.
19.Nonmetallic building materials.
20.Furniture and articles not otherwise classified.
21.Housewares and glass.
22.Cordage and fibers.
23.Yarns and threads.
24.fabrics.
25.Clothing.
26.Fancy goods.
27.Floor coverings.
28.Toys and sporting goods.
29.Meats and processed foods.
30.Staple foods.
31.Natural agricultural products.
32.Light beverages.
33.Wines and spirits.
34.Smokers' articles.
SERVICES
CLASSTITLE
35.Advertising and business.
36.Insurance and financial.
37.Construction and repair.
38.Communication.
39.Transportation and storage.
40.Material treatment.
41.Education and entertainment.
42.Miscellaneous.

(1963, P.A. 51, S. 8; P.A. 93-152, S. 8.)
History: P.A. 93-152 provided that a single application for registration of a mark may indicate "the appropriate class of goods or services", revised and reduced from fifty-two to thirty-four the number of classes of goods and reordered and renumbered the classes of services.

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Sec. 35-11i. Illegal use of mark. Remedies. (a) Subject to the provisions of section 35-11k, any person who (1) uses in Connecticut, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services or (2) reproduces, counterfeits, copies or colorably imitates any such mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive purchasers, shall be liable in a civil action by the registrant for any or all of the remedies provided in subsection (b) of this section, except that under subdivision (2) of this subsection the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or to cause mistake or to deceive.
(b) Any registrant of a mark registered under this chapter may proceed by suit to enjoin the wrongful manufacture, use, display or sale of any reproduction, counterfeit or imitation thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be deemed just and reasonable, and may require the defendants to pay to such registrant all profits derived from, or all damages suffered by reason of, such wrongful manufacture, use, display or sale or both such profits and damages; and such court may also order that any such reproduction, counterfeit or imitation in the possession or under the control of any defendant be delivered to an officer of the court to be destroyed, or to the complainant. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee of the prevailing party in such cases where the court finds the other party committed such wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case. The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of this state.
(c) The registrant of a mark which is famous in this state shall be entitled, subject to the principles of equity, to an injunction against another's use of a mark, commencing after the registrant's mark becomes famous, which causes dilution of the distinctive quality of the registrant's mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is famous, a court may consider factors including, but not limited to the following: (1) The degree of inherent or acquired distinctiveness of the mark in this state; (2) the duration and extent of use of the mark in connection with the goods and services; (3) the duration and extent of advertising and publicity of the mark in this state; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the registrant's mark is used; (6) the degree of recognition of the registrant's mark in its and in the other's trading areas and channels of trade in this state; and (7) the nature and extent of use of the same or similar mark by third parties. The registrant shall be entitled only to injunctive relief in this state in an action brought under this section, unless the subsequent user wilfully intended to trade on the registrant's reputation or to cause dilution of the registrant's mark. If such wilful intent is proven, the registrant shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and the principles of equity.
(1963, P.A. 51, S. 9; P.A. 93-152, S. 9.)
History: P.A. 93-152 amended Subsec. (a) to replace "likely to cause confusion or to cause mistake or to deceive purchasers" with "likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services", replace "owner of such registered mark" with "registrant" and replace "committed with knowledge that such imitation is intended to be used to cause confusion or to cause mistake or to deceive purchasers" with "committed with the intent to cause confusion or to cause mistake or to deceive", amended Subsec. (b) to replace "owner" with "registrant", rephrase provision re granting of injunctions and add provision authorizing the court to enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee when it makes certain findings, and deleted former Subsec. (c) re likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name as a ground for injunctive relief for unauthorized use of such mark or trade name and inserted new Subsec. (c) to entitle the registrant of a mark which is famous to an injunction and other relief against another's use of a mark that causes dilution, set forth the factors a court may consider in determining whether a mark is famous and specify remedies available to a registrant when the subsequent user wilfully intended to trade on the registrant's reputation or to cause dilution.
Held not applicable in action for injunction against use of similar name by new business firm. 27 CS 200.
Subsec. (c):
Cited. 173 C. 261, 268.
Approximation of FM radio station's assigned frequency does not constitute a service mark. 35 CS 1, 4, 5, 12.

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Sec. 35-11j. Fraudulent registration. Any person who, for himself or on behalf of any other person, procures the filing or registration of any mark in the office of the Secretary of the State under the provisions of this chapter, by knowingly making any false or fraudulent representation or declaration, orally or in writing, or by any other fraudulent means, shall be liable to pay all damages sustained in consequence of such filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction.
(1963, P.A. 51, S. 10; P.A. 93-152, S. 10.)
History: P.A. 93-152 substituted "orally" for "verbally".

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Sec. 35-11k. Common law rights not affected. Nothing in this chapter shall adversely affect the rights or the enforcement of rights in marks or trade names acquired in good faith at any time at common law.
(1963, P.A. 51, S. 11.)
Cited. 173 C. 261, 268.

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Sec. 35-11l. Trademark and service mark information furnished on request; fees. Upon request of any person, the Secretary of the State shall issue a certificate showing whether any trade or service mark or marks using a particular name or design referred to in such certificate, or using a similar name or design, in a particular class has been registered and, if so, the date and hour of such registration. The fee for such certificate shall be twenty-five dollars. Upon request, the secretary shall furnish a copy of any trade or service mark for a fee of twenty dollars or a certified copy of any trade or service mark for a fee of twenty-five dollars.
(February, 1965, P.A. 400; P.A. 73-483, S. 6; P.A. 93-152, S. 11.)
History: P.A. 73-483 raised fee for certificate from three to ten dollars; P.A. 93-152 increased the fee for a certificate from ten to twenty-five dollars, the fee for a copy of any trade or service mark from four to twenty dollars and the fee for a certified copy of any trade or service mark from seven to twenty-five dollars.

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Sec. 35-11m. Incontestable right of registrant. Except on a ground for which application to cancel may be filed at any time under subdivision (4) of section 35-11g and except to the extent, if any, to which the use of a mark infringes a mark registered or published by the United States Patent and Trademark Office prior to the date of registration pursuant to this chapter the right of the registrant pursuant to this chapter to use such registered mark in commerce within Connecticut for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration in Connecticut and is still in use in commerce, shall be incontestable; provided (1) there has been no final decision adverse to the registrant's claim of ownership of such mark for such goods or services, or to the registrant's right to register the same or to keep the same on the register; and (2) there is no proceeding involving said rights pending in the United States Patent and Trademark Office or in a court and not finally disposed of; and (3) no incontestable right shall be acquired in a mark which is the common descriptive name of any article or substance, patented or otherwise.
(P.A. 73-483, S. 10; P.A. 96-180, S. 113, 166.)
History: P.A. 96-180 made technical changes to correct references to U.S. Patent and Trademark Office, effective June 3, 1996.

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